tm question on la ***** (french word)(italian word)

[oberheimer]

if there is a tm on "La *****" (french word = The *****)
Can i get "Le *****" (the italian word = The *****)
and brand it and sell in the us (clothing brand)
The second name is the same in both languages

 

[DNQuest.com]

In simple terms.. no

From what I read, you want to take a domain and change one letter and use it in the same field as the TM. This would come under "comfusingly similar" and if challenged, you would probably lose.

 

[Ian]

I think it depends on whether the name has been trade marked in the second country. To set the record straight simply confirm witht the US trademark registrar to avoid regrets later.

 

[oberheimer]

I think it depends on whether the name has been trade marked in the second country. To set the record straight simply confirm witht the US trademark registrar to avoid regrets later.

but if i get a tm here in europe can i sell in the us or (the clothes)?

 

[DNQuest.com]

It would depend on the scope of the other company. Are they world known or limited to an area? Remember, with the internet, a small company in a small country can be world reknown. And many countries will honor other countries TMs. Additionally, in a UDRP, a TM holder does not need to show where there TM is located, just that they can prove they have rights to a domain.

 

[Brett Lewis]

You have two potential issues: trademark infringement and cybersquatting.

Trademark rights are country-specific. Infringement would depend on whether the French company had trademark rights in the company in which you were selling your products. Trademark rights can be either registered, common law or both, depending on the country. If it is a well-known company, the odds of there being an issue are greater. The difference between "Le" and "La" probably won't differentiate these two brands.

Cybersquatting issues would not require actual infringement, but merely confusing similarity, lack of legitimate interests and a bad faith intent to profit off of an existing trademark. Based on what you stated in your post, there are definite red flags here.


Best,
Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

 

[oberheimer]

ok so you don't think i should get that name or?
And yes they have a tm in us and europe le *****

Is there any chance that i could use it or is it a waste of time

 

[DNQuest.com]

Then it seems to me they are world reknowned if that is the case. There is a good chance it is a waste of time.